Analysis of the risk of confusion between a domain name and a trademark within the scope of the UDRP proceedings

SOURCE: WOPI, Arbitration and Mediation Centre, 15 November 2018, No. D2018-1865, Medical Marijuana, Inc. v. Domains By Proxy, LLC / Michael Wigton, <cbdhempmeds.net>

 The opinions of the experts may diverge regarding how to interpret the conditions of the UDRP. Here, it is the first of the conditions that is under discussion, the one according to which there must be a risk of confusion between the domain name under attack and the trademark rights invoked.

Is this a purely formal analysis, that is to say are the trademark and the name identical or at least very similar? Or should we proceed to a more in-depth analysis, to determine whether a risk of confusion in the minds of the internet users is precisely likely to emerge?

 

Medical Marijuana, Inc., based in California, specialises in the manufacture and sale of numerous products, such as cosmetics and food supplements that include cannabidiol (CBD), a hemp by-product.

Medical Marijuana is the owner of several brands identifying their products, registered in the United States, Peru and Mexico. All include the sign “HEMPMEDS” (“hemp” meaning the plant and “med” being short for “medicines”). Two trademarks protected in the United States are the sign “HEMPMEDS YOUR TRUSTED CBD SOURCE”, one verbal and the other semi-figurative, it being specified that in both cases, the USPTO (United States Trademark Office) required a disclaimer on the term “HEMPMEDS”, i.e. a waiver of any exclusive right on this term.

This company found that one of its competitors, Bionic Sports Nutrition, LLC, had registered the domain name <cbdhempmeds.com>, which, according to Medical Marijuana, infringes their rights. They therefore filed a UDRP complaint before the WOPI Arbitration and Mediation Centre, submitting the case to a panel of three experts. The contentious name was reserved on 4 July 2017 and it links to a site on which the defendant markets its products containing CBD.

 

The applicant considers that this domain name causes confusion with its brands, since it is composed not only of the sign “HEMPMEDS” but also the acronym “CBD”. In addition, it states that the grantee was necessarily aware of the rights of the applicant, as it asserts that it is well-known in the cannabidiol sector.

The defendant does not agree. It submits that the applicant has no rights over the expression “CBD HEMP MEDS” or on “HEMP MEDS” alone. Furthermore, it considers that it has rights to the domain name since it uses it to sell CBD-based products via its subsidiary, CBD Medical, LLC.

The experts consider the first condition of the UDRP proceedings to be fulfilled: the applicant holds identical or similar trademark rights to the domain name, to the extent that a likelihood of confusion may arise. The analysis carried out corresponds to an analysis that can be described as formal: the applicant has trademark rights, similar to the domain name.

 

However, the experts express a reservation in the midst of their analysis. They base their remarks on the Mexican and Peruvian semi-figurative trademarks. This is because the American marks “HEMPMEDS YOUR TRUSTED CBD SOURCE” include a disclaimer on the sequence “HEMPMEDS” and the applicant does not have any rights to the sign “CBD” alone.

In addition, the fact that the applicant owns a trademark “HEMPMEDS”, stylised, registered with the Supplemental Register does not permit it to claim trademark rights enforceable in this context. It should be noted that this register only offers limited protection compared to the main register.

 

These remarks have an impact on the examination of the two other UDRP conditions. Indeed, the experts conclude that the defendant uses the domain name for a bona fide offer of products, namely for the sale of CBD-based products, and that the terms included in the domain name merely illustrate this offer.

Similarly, since the experts do not take account of brands registered in the United States, they consider there is no proof that the grantee had knowledge of the foreign rights of the applicant.

The complaint is therefore rejected.

To return to the first condition of the UDRP. One of the experts wished to express additional observations on this subject, focusing on the fact that it is, in principle, required to prove a likelihood of confusion between a trademark and a domain name. Now, the expert considers that this is not the case here. To support his point, he proposes an example: If a person held a trademark right in Greece on the sign “COMPUTER”, would we recognize that confusion is possible with a domain name such as <computer.org>?

These remarks show that some experts are more flexible than others concerning the analysis of the first criterion of the UDRP. Nonetheless, note that generally, while sometimes the first condition is considered to be met, the experts nonetheless remain very vigilant about the other conditions, to make sure the decisions rendered are equitable.

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